DCT
5:23-cv-00297
Shibumi Shade Inc v. Beach Shade LLC
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Shibumi Shade, Inc. (North Carolina)
- Defendant: Beach Shade LLC (North Carolina) and Matthew Finneran (North Carolina)
- Plaintiff’s Counsel: Womble Bond Dickinson (US) LLP
- Case Identification: 5:23-cv-00297, E.D.N.C., 06/05/2023
- Venue Allegations: Venue is alleged to be proper in the Eastern District of North Carolina because the individual defendant is domiciled there and the corporate defendant has a regular and established place of business in the district.
- Core Dispute: Plaintiff alleges that Defendant’s "Beach Shade Cordless" product infringes a patent directed to a wind-supported shading system.
- Technical Context: The technology concerns lightweight, portable beach canopies that are supported by a combination of a structural frame and ambient wind, a design intended to improve stability and ease of assembly compared to traditional beach umbrellas.
- Key Procedural History: The complaint notes that this lawsuit follows prior litigation between the same parties (Case No. 5:21-cv-256-FL) over a previous version of Defendant's product. In that ongoing case, the court granted a preliminary injunction against Defendant's "Beach Shade Gen 1" product. The complaint alleges the currently accused "Beach Shade Cordless" was introduced by Defendants following that injunction.
Case Timeline
| Date | Event |
|---|---|
| 2016-10-18 | '924 Patent Priority Date |
| 2021-05-24 | Defendants allegedly launch "Beach Shade Gen 1" product |
| 2021-06-11 | Plaintiff files first lawsuit against Defendants (5:21-cv-256) |
| 2022-02-08 | Court grants preliminary injunction in first lawsuit |
| 2023-04-25 | '924 Patent Issued |
| 2023-05-03 | Defendants allegedly launch "Beach Shade Cordless" (Accused Product) |
| 2023-06-05 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 11,634,924 - SHADING SYSTEM AND METHOD OF USE, issued April 25, 2023
The Invention Explained
- Problem Addressed: The patent's background section identifies a need for a shading system that is not "ineffective or impractical," noting that prior art systems can be "cumbersome to transport or assemble" or susceptible to being "shifted or unanchored by wind" (’924 Patent, col. 1:26-34).
- The Patented Solution: The invention is a portable shading system comprising a flexible canopy aerially suspended from a single, arched frame. A key aspect of the design is that the canopy is not merely stretched taut but is configured to be "at least partially supportable by wind," using airflow to help lift and stabilize the structure (’924 Patent, col. 8:25-28; Fig. 1). The frame itself is comprised of multiple connectable sections for transportability, and its ends are designed to be secured directly into a surface like sand (’924 Patent, Abstract).
- Technical Importance: This approach seeks to leverage wind as a stabilizing force, rather than treating it as a problem to be overcome with heavy anchors and rigid structures common in conventional beach shades (’924 Patent, col. 1:28-30).
Key Claims at a Glance
- The complaint asserts independent claim 13 (’924 Patent, col. 9:27; Compl. ¶28).
- The essential elements of independent claim 13 include:
- A frame made of engageable/disengageable sections with a cable running through, where the ends have a "corkscrew shape" for engaging a surface.
- A canopy extending between a first end (attached to the frame) and an opposing second end.
- At least one fastener to secure the canopy to the frame, where the canopy is "at least partially supportable by wind."
- The fastener has a "higher coefficient of friction" than the frame sections.
- The second end of the canopy defines a "tail" that can be coupled to an anchor.
- The complaint reserves the right to assert additional claims (’924 Patent, Compl. ¶27).
III. The Accused Instrumentality
Product Identification
- The accused instrumentality is the "Beach Shade Cordless" product (Compl. ¶20).
Functionality and Market Context
- The complaint alleges the Accused Product is a beach shade system that functions as a "nearly identical copy" of Plaintiff's Shibumi Shade (Compl. ¶21). The complaint includes a side-by-side photograph comparing the Accused Product with Plaintiff's product, showing both as arched canopies used on a beach (Compl. p. 9). The complaint alleges Defendants introduced this product after being enjoined from selling a prior version and that they market it as a lower-priced alternative to Plaintiff's product (Compl. ¶¶20, 24).
IV. Analysis of Infringement Allegations
The complaint references a claim chart exhibit that is not provided; the following table summarizes the infringement theory based on the narrative allegations.
'924 Patent Infringement Allegations
| Claim Element (from Independent Claim 13) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a frame defined by a plurality of sections and comprising a cable extending therethrough... wherein each of a left end and a right end of the frame in the supporting configuration has a corkscrew shape for engaging a surface; | The Accused Product comprises a frame made of multiple sections connected by a cable, with ends shaped like a corkscrew for ground engagement. | ¶30 | col. 9:30-39 |
| a canopy extending between a first end and an opposing second end, the first end of the canopy extending between a left end and a right end; | The Accused Product comprises a canopy with a first end that extends between the left and right ends of the frame. | ¶31 | col. 9:40-43 |
| at least one fastener that secures the canopy in position relative to the frame, wherein the second end of the canopy is spaced apart from the frame... such that the canopy is... at least partially supportable by wind... | The Accused Product includes at least one fastener, its canopy is spaced from the frame, and it is at least partially supported by wind. | ¶32 | col. 9:44-50 |
| wherein the at least one fastener has a higher coefficient of friction with respect to a coefficient of friction of the plurality of sections of the frame, and | The fastener of the Accused Product allegedly has a higher coefficient of friction than the sections of its frame. | ¶32 | col. 9:48-50 |
| wherein the second end of the canopy defines a tail, the tail being engageable with or coupleable to an anchor for securing the canopy into position. | The Accused Product's canopy has a second end defining a tail that can be secured by an anchor. | ¶33 | col. 9:51-54 |
Identified Points of Contention
- Scope Questions: A central question may be whether the term "corkscrew shape", as used in the patent, can be read to cover the ground-engaging ends of the accused product's frame. The strength of the infringement allegation will depend on the geometric configuration of the accused stakes.
- Technical Questions: The complaint's allegation that the accused fastener has a "higher coefficient of friction" than the frame will require specific factual evidence and potentially expert testimony comparing the materials of the respective components.
- Technical Questions: The functional limitation requiring the canopy to be "at least partially supportable by wind" raises the question of whether the Accused Product operates in the manner claimed. The dispute may turn on evidence of how the accused canopy actually behaves in windy conditions compared to the operation described in the patent.
V. Key Claim Terms for Construction
The Term: "corkscrew shape"
- Context and Importance: This term is critical for literal infringement of the frame element. The parties will likely dispute whether the accused product's ground stakes meet this specific geometric requirement.
- Intrinsic Evidence for a Broader Interpretation: The specification states that the frame ends "may define a conical shape or a corkscrew shape" (’924 Patent, col. 7:36-38), which could suggest that "corkscrew" is exemplary and not strictly limiting, or that it should be interpreted broadly in the context of ground-penetrating shapes.
- Intrinsic Evidence for a Narrower Interpretation: The patent depicts a specific helical structure for the "corkscrew shape" in Figure 9 (element 47) (’924 Patent, Fig. 9). A party could argue this drawing limits the term to a multi-turn, spiral configuration.
The Term: "at least partially supportable by wind"
- Context and Importance: Practitioners may focus on this term because it is a functional limitation that captures what the complaint presents as the core technical advantage of the invention. The infringement analysis will depend on whether the accused canopy functions in this specific manner.
- Intrinsic Evidence for a Broader Interpretation: The claim language itself is open-ended. The specification describes the general concept of the canopy being aerially suspended and interacting with the wind, which could support a construction that is not tied to a specific level or mechanism of wind support (’924 Patent, col. 8:25-28).
- Intrinsic Evidence for a Narrower Interpretation: A party could argue that the term should be defined by the problem it solves, as described in the background—namely, the tendency of prior art shades to be "shifted or unanchored by wind" (’924 Patent, col. 1:29-30). This context may be used to argue the term requires a specific type of stabilizing interaction with the wind, not just any incidental effect.
VI. Other Allegations
Indirect Infringement
- While no separate count for indirect infringement is pleaded, the complaint names the defendant LLC's director, Matthew Finneran, as an individual defendant (Compl. ¶3). It further alleges that the LLC is Mr. Finneran's "alter ego" and that he has "direction and control" over its actions, which may lay a foundation for claims of induced infringement or piercing the corporate veil (Compl. ¶¶3, 25).
Willful Infringement
- The complaint alleges that Defendants' infringement has been willful. The basis for this allegation is Defendants' alleged knowledge of the patent application that resulted in the ’924 Patent, stemming from the prior litigation filed on June 11, 2021, and specific notice of the patent's issuance as of at least May 5, 2023 (Compl. ¶38).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the term "corkscrew shape", which suggests a specific helical geometry, be construed to cover the ground-engaging stakes of the accused product? The outcome may depend on whether the term is interpreted broadly as any shape that screws into the ground or narrowly based on the patent's drawing.
- A second key issue will be one of functional operation: does the accused "Beach Shade Cordless" canopy operate in a way that is "at least partially supportable by wind" as required by the claim? This will likely require expert analysis and evidence comparing the aerodynamic behavior of the accused product to the functionality described in the patent.
- Finally, the case will present a question of proof: can the Plaintiff provide sufficient factual evidence to demonstrate that the accused product's fastener has a "higher coefficient of friction" relative to its frame sections? This specific, comparative limitation will require direct evidentiary support beyond simple observation.