DCT
5:24-cv-00588
Shibumi Shade Inc v. Gardma LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Shibumi Shade, Inc. (North Carolina)
- Defendant: Gardma LLC d/b/a Million Shades America (North Carolina)
- Plaintiff’s Counsel: Womble Bond Dickinson (US) LLP
- Case Identification: 5:24-cv-00588, E.D.N.C., 10/15/2024
- Venue Allegations: Venue is alleged to be proper based on Defendant having a regular and established place of business in North Carolina and having committed alleged acts of infringement, including making, using, and selling the accused product, within the district.
- Core Dispute: Plaintiff alleges that Defendant’s "Ultimate Flying Beach Shade" product infringes a patent related to a wind-powered, portable shading system.
- Technical Context: The technology concerns lightweight, portable beach shades designed to be stabilized by wind, addressing the common problems of bulkiness and instability associated with traditional beach umbrellas.
- Key Procedural History: The complaint alleges that Plaintiff sent a notice letter to Defendant on July 25, 2024, identifying the patent-in-suit and the accused product. Defendant’s alleged continuation of sales after this date forms the basis for the willfulness allegation.
Case Timeline
| Date | Event |
|---|---|
| 2016-10-18 | Priority Date for U.S. Patent No. 11,634,924 |
| 2023-04-25 | Issue Date for U.S. Patent No. 11,634,924 |
| 2024-07-25 | Plaintiff sends notice letter to Defendant |
| 2024-10-15 | Complaint Filed |
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 describes prior art shading systems as often being "ineffective or impractical." Specifically, they can be "cumbersome to transport or assemble" or include rigid canopies that are "susceptible to being shifted or unanchored by wind" (’924 Patent, col. 1:28-33).
- The Patented Solution: The invention is a transportable shading system comprising a flexible, multi-section frame that supports a lightweight canopy. The frame is assembled into a single arch, and its ends are secured into a surface like sand. The canopy is attached to the frame and is designed to be "at least partially supportable by wind," using the breeze to help suspend the fabric and provide shade (’924 Patent, Abstract; col. 3:7-14). This design aims for easy setup and uses ambient wind as a stabilizing force rather than a disruptive one.
- Technical Importance: This approach provides a lightweight, portable shade solution that is structurally cooperative with, rather than resistant to, wind, addressing a persistent challenge for beachgoers (’924 Patent, col. 1:36-39).
Key Claims at a Glance
- The complaint asserts infringement of at least independent Claim 21 (Compl. ¶14).
- The essential elements of Claim 21 include:
- A frame made of multiple engageable sections with a cable running through them, where the left and right ends have a "corkscrew shape" for engaging a surface.
- A canopy with a suspension end and a trailing end, where the trailing end is spaced from the frame so the canopy is "supportable by the frame and at least partially supportable by wind."
- A container that can both house the system components and act as a "first anchor" to help retain the frame.
- At least one fastener that secures the canopy to the frame and has a "higher coefficient of friction" than the frame itself.
- The complaint does not explicitly reserve the right to assert dependent claims, but states the accused product infringes "one or more claims" of the patent (Compl. ¶14).
III. The Accused Instrumentality
Product Identification
- Defendant's "Ultimate Flying Beach Shade" product (Compl. ¶5).
Functionality and Market Context
- The complaint alleges the Accused Product is a shading system that Defendant imports, manufactures, distributes, and sells in the United States (Compl. ¶12). The complaint provides photographs of Plaintiff's own "Shibumi Shade" product, which it alleges Defendant copied, showing a large, arched canopy supported by a single frame anchored in the sand (Compl. p. 3). The complaint asserts that through the release of the Accused Product, Defendant "unlawfully copied Plaintiff's innovations to unfairly compete" (Compl. ¶12).
IV. Analysis of Infringement Allegations
The complaint references a claim chart in "Exhibit B," which was not provided with the filed complaint. The following summary is based on the narrative allegations in paragraphs 16-20.
’924 Patent Infringement Allegations
| Claim Element (from Independent Claim 21) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a frame defined by a plurality of sections that include a left end, a right end...and comprising a cable extending therethrough...wherein each of the left end and the right end has a corkscrew shape effective for engaging a surface | The Accused Product is alleged to comprise a frame made of multiple engageable sections that can be assembled into a supporting configuration or disassembled for transport, and whose ends have a corkscrew shape. | ¶17 | col. 7:31-34 |
| a canopy extending between a suspension end and an opposing trailing end...wherein the trailing end of the canopy is spaced apart from the portion of the frame...such that the canopy is supportable by the frame and at least partially supportable by wind... | The Accused Product is alleged to comprise a canopy that attaches to the frame and is at least partially supported by wind to provide shade. | ¶18 | col. 4:35-43 |
| a container capable of housing and transporting the components of the system therein as well as acting as a first anchor that is coupleable to...the frame and the canopy, and engageable with the surface to retain the frame... | The Accused Product is alleged to comprise a container that both transports the system components and can be used as an anchor to help secure the frame. | ¶19 | col. 6:46-55 |
| wherein the at least one fastener that secures the canopy in position relative to the frame has a higher coefficient of friction with respect to a coefficient of friction of the frame | The Accused Product is alleged to comprise a fastener for securing the canopy to the frame that has a higher coefficient of friction than the frame itself. | ¶20 | col. 5:5-9 |
- Identified Points of Contention:
- Scope Questions: A central question may be whether the accused product's features meet the specific functional and structural limitations of the claims. For example, does the carrying bag for the accused product function as "a first anchor that is coupleable to...the frame and the canopy," or is it merely a bag?
- Technical Questions: The allegation that a fastener has a "higher coefficient of friction" is a specific, testable physical property. The complaint does not provide evidence (e.g., test data) to support this allegation, raising the question of what factual basis exists for it. Similarly, whether the ends of the accused frame have a "corkscrew shape" is a direct question of structural correspondence that will depend on the physical product.
V. Key Claim Terms for Construction
The Term: "partially supportable by wind"
Context and Importance: This term appears central to the patent's novelty, distinguishing it from structures that are merely subject to wind. The degree to which wind must contribute to the canopy's suspension to meet this limitation will be a key issue. Practitioners may focus on this term because its definition will determine whether a wide range of wind-affected shades infringe or only those that rely on a specific aerodynamic principle taught in the patent.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The background suggests any system that is not "susceptible to being shifted or unanchored by wind" could be an improvement, potentially supporting a broad reading that covers any design where wind does not cause failure (’924 Patent, col. 1:31-33).
- Evidence for a Narrower Interpretation: The detailed description explains that the canopy can "define one or more vent holes and/or wind socks for permitting wind to pass therethrough," suggesting a more complex and intentional interaction with airflow beyond simple lift (’924 Patent, col. 4:35-38).
The Term: "a container...acting as a first anchor"
Context and Importance: This limitation requires a single component to perform two distinct functions: transport and anchorage. Infringement will depend on whether the accused product's container is designed or instructed to be used as an anchor. The complaint alleges this dual functionality is present in the accused product (Compl. ¶19).
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language "acting as" could be argued to encompass any use of the container as an anchor, even if not its primary designed purpose.
- Evidence for a Narrower Interpretation: The specification describes a specific mechanism where the container is "inverted for housing weight" and a cord is attached to its interior bottom "for inverting the container to serve as the anchor" (’924 Patent, col. 2:46-49; col. 6:55-58). This may support a narrower construction requiring a structure adapted for such inversion and use.
VI. Other Allegations
- Willful Infringement: The complaint alleges that Defendant had knowledge of the ’924 Patent and its infringement at least as early as July 25, 2024, the date of a notice letter from Plaintiff's counsel (Compl. ¶21, 26). The willfulness claim is based on Defendant’s alleged continuation of infringing activities after receiving this notice (Compl. ¶26).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of functional correspondence: does the accused product’s carrying bag operate as a "first anchor," and does its canopy fastener possess a "higher coefficient of friction" relative to the frame? These are specific functional limitations that will require factual evidence beyond what is provided in the complaint.
- The case may also turn on a question of structural identity: does the accused product's frame literally incorporate a "corkscrew shape" at its ends as required by Claim 21? A mismatch on this explicit structural element could be a significant hurdle for a literal infringement theory.
- Finally, a central question of definitional scope will be the interpretation of "partially supportable by wind." The court’s construction of this term will likely determine whether the claim covers a broad category of wind-inflated shades or is limited to a more specific configuration described in the patent's embodiments.