Shibumi Shade Inc v. Beach Shade LLC

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Shibumi Shade, Inc. (North Carolina)
  • Defendant: Beach Shade LLC, and Matthew Finneran (North Carolina)
  • Plaintiff’s Counsel: Womble Bond Dickinson (US) LLP
• Case Identification: 5:21-cv-256, E.D.N.C., 01/20/2023
• Venue Allegations: Venue is alleged to be proper based on Defendant Matthew Finneran’s domicile and Defendant Beach Shade LLC’s regular and established place of business within the Eastern District of North Carolina.
• Core Dispute: Plaintiff alleges that Defendant’s "Beach Shade" product infringes five U.S. patents directed to portable, wind-powered beach canopies.
• Technical Context: The technology at issue relates to lightweight, transportable shade structures that utilize wind to aerially suspend a canopy, offering an alternative to traditional beach umbrellas that are often susceptible to wind.
• Key Procedural History: The First Amended Complaint was filed after significant prior proceedings. The court granted a preliminary injunction on February 8, 2022, enjoining Defendants from certain activities related to the accused product. Defendants subsequently filed a motion for reconsideration, which the court granted in part and denied in part, and later filed a notice of appeal regarding the injunction.

Case Timeline

Date	Event
2016-10-18	Earliest Priority Date for all Patents-in-Suit
2016-01-01	Plaintiff launches its Shibumi Shade product (approximate)
2019-01-29	U.S. Patent No. 10,190,330 Issues
2020-08-25	U.S. Patent No. 10,753,117 Issues
2020-10-01	Defendants allegedly import Accused Products (approximate)
2021-04-01	Defendants begin selling Accused Product (approximate)
2021-05-24	Defendants allegedly receive notice of the ’330 and ’117 Patents
2021-06-11	Original Complaint filed
2021-09-07	U.S. Patent No. 11,111,690 Issues
2022-02-08	Court grants Plaintiff's Motion for Preliminary Injunction
2022-02-22	U.S. Patent No. 11,255,103 Issues
2022-04-12	U.S. Patent No. 11,299,904 Issues
2023-01-20	First Amended Complaint filed

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

U.S. Patent No. 10,190,330 - "SHADING SYSTEM AND METHOD OF USE" (Issued Jan. 29, 2019)

The Invention Explained

• Problem Addressed: The patent identifies the shortcomings of prior art outdoor shading systems, noting they are often ineffective, cumbersome to transport and assemble, or susceptible to being unanchored by wind (’330 Patent, col. 1:21-34).
• The Patented Solution: The invention proposes a lightweight, transportable shading system comprising a flexible canopy that is held in "complete aerial suspension" by a single, continuous frame made of connectable sections. The frame forms an arch with its ends secured in a surface like sand, allowing the canopy to be supported by the wind. The system also describes a container that serves both for transport and as a fillable anchor to provide stability (’330 Patent, Abstract; col. 4:26-30; Fig. 1).
• Technical Importance: This design approach leverages wind as a supporting force rather than an adverse one, representing a potential improvement in stability and portability over conventional, rigid-framed beach umbrellas (’330 Patent, col. 1:30-34).

Key Claims at a Glance

• The complaint asserts independent claim 1 (Compl. ¶27). The essential elements are:
  • a canopy configured for engagement with, and complete aerial suspension by, a single, continuous frame,
  • wherein the frame consists essentially of a plurality of sections configured for end-to-end alignment,
  • wherein the left and right ends of the frame are configured to be secured to the surface for aerially supporting the frame and canopy,
  • a container for housing and transporting the system's components, which also functions as an anchor for housing weight, and
  • a cord coupled to the interior of the container for inverting it to serve as the anchor, with the cord also being engageable with the frame.
• The complaint alleges infringement of "one or more claims," reserving the right to assert others (Compl. ¶26).

U.S. Patent No. 10,753,117 - "SHADING SYSTEM AND METHOD OF USE" (Issued Aug. 25, 2020)

The Invention Explained

• Problem Addressed: The patent addresses the same problems of portability and wind-resistance in beach shades as the ’330 Patent (’117 Patent, col. 1:21-34).
• The Patented Solution: This patent, a continuation of the application leading to the ’330 Patent, describes the shading system with greater geometric and functional specificity. It claims a frame configured to lie in a "plane substantially perpendicular to the surface" when in use. The canopy is attached to the frame but has a trailing end spaced apart from it, allowing the canopy to extend at a "non-coplanar" angle that "vary[s] with the wind force." The invention also explicitly claims a cable extending through the frame sections to maintain tension and an anchor system to keep the frame stable within its perpendicular plane (’117 Patent, Abstract; col. 8:1-45).
• Technical Importance: The invention's claimed geometry and relationship between the frame, canopy, and wind force define a specific aerodynamic configuration intended to achieve stable, wind-powered suspension (’117 Patent, col. 8:24-34).

Key Claims at a Glance

• The complaint asserts independent claim 1 (Compl. ¶35). Its essential elements are:
  • a frame engageable with a surface and configured to lie within a plane substantially perpendicular to the surface, comprising a plurality of longitudinally-extending sections,
  • a cable extending through the plurality of longitudinally-extending sections,
  • a canopy with a suspension end coupleable to the frame and a trailing end spaced apart, such that wind causes the canopy to extend at a non-coplanar angle to the frame's plane that varies with the wind,
  • a cord coupleable to the frame, and
  • an anchor coupleable to the cord that contacts the surface to keep the frame substantially within its plane when wind is applied to the canopy.
• The complaint reserves the right to assert additional claims (Compl. ¶34).

U.S. Patent No. 11,111,690 - "SHADING SYSTEM AND METHOD OF USE" (Issued Sep. 7, 2021)

• Technology Synopsis: This patent describes a shading system comprising a sectional frame in a supporting configuration, a sheet of material coupled to the frame, and a container that serves a dual role: housing the system for transport and, in another configuration, housing weight to act as an anchor connected to the frame via a cord. The claims focus on the combination of these core functional components.
• Asserted Claims: Independent claim 1 (Compl. ¶44).
• Accused Features: The complaint alleges the Accused Product’s combination of a sectional frame, a canopy, and a carrying-bag-as-anchor infringes (Compl. ¶45-49).

U.S. Patent No. 11,255,103 - "SHADING SYSTEM AND METHOD OF USE" (Issued Feb. 22, 2022)

• Technology Synopsis: This patent focuses on the maneuverability of the system. It claims a frame with sections and an "aligning component" (e.g., an internal cable) that allows the sections to move between a "compactly configured transport configuration" and a "supporting configuration" where the sections are aligned. The system includes a canopy, cord, anchor, and a container for transport that also acts as the anchor.
• Asserted Claims: Independent claim 21 (Compl. ¶52).
• Accused Features: The allegations target the Accused Product's ability to be collapsed into a compact form for transport and assembled into an aligned, supportive frame for use (Compl. ¶53-58).

U.S. Patent No. 11,299,904 - "SHADING SYSTEM AND METHOD OF USE" (Issued Apr. 12, 2022)

• Technology Synopsis: This patent claims a system where at least one frame is configured to lie in a plane "substantially perpendicular" to the surface. The frame includes a plurality of sections maneuverable between transport and supporting configurations. The system includes a canopy supported by wind and the frame, a cord, and a container that is coupleable to the cord and acts as an anchor.
• Asserted Claims: Independent claim 19 (Compl. ¶61).
• Accused Features: The infringement allegations focus on the Accused Product's maneuverable frame, its perpendicular orientation in use, and its use of a wind-supported canopy stabilized by a container-anchor (Compl. ¶62-66).

III. The Accused Instrumentality

Product Identification

• The "Beach Shade" product sold by Defendants Beach Shade LLC and Matthew Finneran (Compl. ¶7).

Functionality and Market Context

• The complaint alleges the Accused Product is a "nearly identical copy" of Plaintiff’s Shibumi Shade (Compl. ¶19). It is described as a system comprising a rectangular canopy attached on one side to a continuous, curved frame made of pole segments. The frame ends are inserted into the sand, a cord extends from the frame to an anchor, and the anchor consists of the product's carrying case filled with sand (Compl. ¶71). A side-by-side photograph provided in the complaint shows the Accused Product and the Shibumi Shade, highlighting their visual and structural similarities (Compl. ¶19, p. 10). The product is allegedly sold online directly to consumers and targets the same class of "beachgoers" as Plaintiff's product (Compl. ¶23, 74).

IV. Analysis of Infringement Allegations

’330 Patent Infringement Allegations

Claim Element (from Independent Claim 1)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
a canopy configured for engagement with, and complete aerial suspension by, a single, continuous frame,	The Accused Product’s canopy is allegedly engaged with and aerially suspended by its frame.	¶29	col. 3:63-65
wherein the frame consists essentially of a plurality of sections configured for end-to-end alignment...	The Accused Product’s frame is allegedly a single, continuous structure composed of multiple sections aligned end-to-end.	¶30	col. 5:6-14
wherein the left end and the right end are configured to be secured to the surface for aerially supporting the frame and completely suspending the canopy aerially,	The ends of the Accused Product's frame are allegedly inserted into a surface (sand) to support the frame and canopy. The complaint includes a photograph from Defendant's website showing this configuration (Compl. ¶21, p. 11).	¶30	col. 2:51-55
a container for housing and transporting all of the other components of the system, wherein the container is also an anchor for housing weight,	The Accused Product allegedly includes a carrying bag that is used to transport the components and is also designed to be filled with sand to function as a weighted anchor.	¶31	col. 6:41-43
a cord selectively engaged or coupled to an interior of the container for inverting the container to serve as the anchor for housing weight, the cord selectively engageable or coupled to the frame.	The Accused Product allegedly has a cord that connects the container/anchor to the frame, with the complaint asserting the specific mechanism of being coupled to the container's interior to facilitate its inversion into an anchor.	¶32	col. 6:44-48

’117 Patent Infringement Allegations

Claim Element (from Independent Claim 1)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
a frame being directly engageable with the surface such that...the frame is configured to lie within a plane substantially perpendicular to the surface...	The Accused Product's frame allegedly engages with the sand and is configured to stand in a plane that is substantially upright and perpendicular to the beach surface.	¶37	col. 8:1-6
a cable extending through the plurality of longitudinally-extending sections of the frame...	The Accused Product’s frame is alleged to contain a cable that runs through its constituent sections.	¶38	col. 8:13-15
a canopy extending between a suspension end and an opposing trailing end...wherein the trailing end...is spaced apart from the...frame such that when a wind force is applied to the canopy, the canopy extends at an angle relative to the plane, the angle being non-coplanar with the plane and varying with the wind force;	The Accused Product’s canopy is allegedly attached to the frame and floats freely, adopting a non-coplanar angle relative to the frame that changes with the wind. The complaint provides a photo comparing the Accused Product (top) and Shibumi Shade (bottom) to illustrate this floating appearance (Compl. ¶71, p. 24).	¶39	col. 8:24-34
a cord having a first end and a second end, the first end or the second end of the cord being coupleable to the frame;	The Accused Product allegedly includes a cord that couples to the frame to provide stability.	¶40	col. 8:35-37
an anchor coupleable to the other of the second end or the first end of the cord and being in contact with the surface...so that the frame remains substantially within the plane when the wind force is applied to the canopy.	The Accused Product allegedly uses its sand-filled bag as an anchor, connected by the cord, to maintain the frame's stability and its substantially perpendicular orientation against wind forces.	¶41	col. 8:38-45

Identified Points of Contention

• Functional Limitations: A primary area of dispute for the ’117 Patent may involve the functional and geometric limitations, such as whether the accused frame remains in a "plane substantially perpendicular to the surface" and whether its canopy's angle is "non-coplanar" and "vary[s] with the wind force." These allegations depend on the product's operational behavior, not just its static structure, raising evidentiary questions about how the accused product actually performs in real-world conditions.
• Scope of "consists essentially of": For the ’330 Patent, the transitional phrase "consists essentially of" may become a focal point. A defense could be structured around arguing that the Accused Product contains additional, un-claimed components that materially alter the "basic and novel properties" of the claimed invention, thereby taking it outside the scope of the claim.

V. Key Claim Terms for Construction

The Term: "complete aerial suspension" (’330 Patent, Claim 1)

• Context and Importance: This term defines the state of the canopy. The infringement analysis will depend on whether the accused canopy is supported entirely by the frame and air, without touching the ground. Practitioners may focus on this term because its absoluteness ("complete") could provide a basis for a non-infringement argument if the accused canopy's trailing edge makes contact with the surface under certain conditions.
• Evidence for a Broader Interpretation: The specification’s figures and general description depict the canopy floating freely above the surface, suggesting the intended meaning is that the canopy is not structurally designed to be a ground-contacting wall, allowing for incidental contact (’330 Patent, Fig. 1; Abstract).
• Evidence for a Narrower Interpretation: The use of the word "complete" could be argued to impose a strict requirement of no ground contact. The fact that the later ’117 Patent uses different language—describing the trailing end as "spaced apart from the...frame" (’117 Patent, col. 8:29-30)—may be used to argue that "complete aerial suspension" in the earlier patent has a distinct, more restrictive meaning.

The Term: "plane substantially perpendicular to the surface" (’117 Patent, Claim 1)

• Context and Importance: This term is critical for defining the frame's orientation. The word "substantially" is a term of degree, and its scope will be central to the infringement analysis.
• Evidence for a Broader Interpretation: Plaintiff may argue that "substantially" is intended to account for normal variations on an uneven surface like sand and for minor leaning of a flexible structure. The patent drawings depict a generally upright arch, not a perfectly vertical one, which supports a degree of tolerance (’117 Patent, Fig. 1).
• Evidence for a Narrower Interpretation: A defendant could argue that "substantially perpendicular" implies a very narrow range of acceptable angles that their product does not meet, perhaps by design. The absence of a specific angular range defined in the specification creates ambiguity that will likely be resolved through expert testimony on what one of ordinary skill in the art would understand the term to mean in this context.

VI. Other Allegations

Indirect Infringement

• While the primary counts against the issued patents allege direct infringement, the declaratory judgment counts for the more recent patents state that Defendants' future actions will constitute "direct and/or indirect infringement" (Compl. ¶114, 121, 128). The factual basis for indirect infringement would likely stem from allegations that Defendants provide the Accused Product with user manuals or marketing materials that instruct customers to assemble and use it in an infringing manner.

Willful Infringement

• The complaint alleges willful infringement of the ’330 and ’117 patents, asserting that Defendants had knowledge of the pending applications as early as 2018 and received actual notice of the issued patents on May 24, 2021 (Compl. ¶86, 101, 107). The complaint further details a timeline of communications where Plaintiff notified Defendants of the alleged infringement and Defendants refused to cease their activities, which may support a finding of deliberate conduct (Compl. ¶78-85).

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

• A core issue will be one of functional performance: Can Plaintiff prove that the Accused Product, during operation in the wind, meets the specific behavioral and geometric limitations of the ’117 patent, such as the frame remaining "substantially within the plane" and the canopy angle "varying with the wind force"? This question shifts the dispute from a mere comparison of parts to an analysis of dynamic functionality.
• Another key question will be one of definitional scope: How will the court construe terms of degree like "complete" and "substantially"? The viability of infringement claims for the ’330 patent will hinge on whether "complete aerial suspension" permits any incidental ground contact by the canopy, a point of potential factual and legal dispute.
• Finally, a central evidentiary question will concern willfulness: Given the complaint’s detailed allegations of pre-suit notice and subsequent refusal to cease infringement, a key focus will be on what evidence demonstrates Defendants' state of mind and whether their conduct rose to the level of objective recklessness required for enhanced damages.