DCT
1:23-cv-01030
Tedesco v. Spoonflower Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Sharon Tedesco and Marc Tedesco (California)
- Defendant: Spoonflower, Inc. (Delaware); Shutterfly, LLC (Delaware)
- Plaintiff’s Counsel: Olive & Olive, P.A.; Leavitt Eldredge Law Firm
- Case Name: Tedesco v. Spoonflower, Inc.
- Case Identification: 1:23-cv-01030, M.D.N.C., 11/28/2023
- Venue Allegations: Venue is based on Defendant Spoonflower having a regular and established place of business (its headquarters) in Durham, North Carolina, and both Defendants allegedly committing acts of infringement within the district.
- Core Dispute: Plaintiffs allege that Defendants' print-on-demand fabrics, which are printed with machine-readable marks to guide manufacturing, infringe two patents related to fabric encoded with such "procedure maps."
- Technical Context: The technology involves printing non-decorative markings directly onto fabric to convey information like grain direction, which is intended to reduce errors and improve efficiency in sewing and manufacturing.
- Key Procedural History: The complaint alleges that Shutterfly acquired Spoonflower in 2021. Plaintiffs state they provided Defendants with express notice of infringement on May 4, 2022, and a second notice including an infringement analysis on June 24, 2022, over a year before filing the complaint. This history is central to the willfulness allegations.
Case Timeline
| Date | Event |
|---|---|
| 2004-03-04 | Earliest Priority Date for ’885 and ’769 Patents |
| 2007-12-25 | ’885 Patent Issued |
| 2008-08-12 | ’769 Patent Issued |
| 2019 | Alleged Infringement Commenced by Spoonflower (at least as early as) |
| 2021-08-10 | Shutterfly Announces Acquisition of Spoonflower |
| 2022-05-04 | First Notice of Infringement Sent to Defendants |
| 2022-06 | Plaintiff Sharon Tedesco Purchases Accused Product Samples |
| 2022-06-24 | Second Notice of Infringement Sent to Defendants |
| 2023-11-28 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,310,885 - “Fabric Having a Procedure Map” (Issued Dec. 25, 2007)
The Invention Explained
- Problem Addressed: The patent’s background describes the difficulty in accurately measuring and cutting fabric for applications like apparel and upholstery. To correctly orient a pattern, a user must manually reference the fabric’s edge (selvedge) to determine characteristics like the straight of grain, a process that is described as repetitive and prone to error. (Compl. ¶2; ’885 Patent, col. 1:15-41).
- The Patented Solution: The invention is a fabric imprinted with a "procedure map," which consists of machine-made, non-decorative markings. These markings are present at many points across the fabric's surface and identify key characteristics such as lengthwise grain, crosswise grain, true bias, and decorative pattern repeat. This embedded information is intended to allow for more accurate and efficient cutting by a person or a machine without constant reference to the fabric's edge. (’885 Patent, Abstract; col. 1:46-57; FIG. 1).
- Technical Importance: This approach embeds manufacturing and alignment data directly onto the raw material, which can reduce waste, manual labor, and production errors in the textile industry. (’885 Patent, col. 3:35-46).
Key Claims at a Glance
- The complaint identifies independent claim 24 as an example of the patent’s scope. (Compl. ¶12).
- Independent Claim 24 requires:
- A fabric which has a procedure map thereon
- The procedure map comprising at least one set of machine-made markings which:
- is at many points across the breadth and throughout the length of the fabric
- identifies at least one fabric characteristic (e.g., straight of grain, true bias, position of a decorative pattern, up-down direction)
- directly contacts fibers of the fabric
- is not part of a decorative pattern
- The complaint broadly alleges infringement of the "claims of the '885 Patent," which may include dependent claims not explicitly detailed. (Compl. ¶41).
U.S. Patent No. 7,409,769 - “Fabric Having a Procedure Map” (Issued Aug. 12, 2008)
The Invention Explained
- Problem Addressed: As a continuation of the application leading to the ’885 Patent, the ’769 Patent addresses the same technical problem of reducing error and inefficiency in fabric cutting and processing. (’769 Patent, col. 1:18-48).
- The Patented Solution: The ’769 Patent also describes a fabric with a "procedure map" of machine-made, non-decorative markings that identify fabric characteristics. This patent includes claims directed not only to the fabric product itself but also to methods of making the fabric and methods of using the map to detect fabric characteristics. (’769 Patent, Abstract; col. 2:28-44).
- Technical Importance: The invention provides a system for embedding manufacturing data onto fabric, with the ’769 Patent further protecting the methods of creating and utilizing this system. (’769 Patent, col. 3:35-46).
Key Claims at a Glance
- The complaint identifies claims 6, 9, 14, and 20 as pertinent examples. (Compl. ¶13). Independent claims 6 and 14 are foundational.
- Independent Claim 6 (Product) requires:
- A fabric having a procedure map thereon
- The procedure map comprising at least one set of machine-made markings with the same four characteristics as in claim 24 of the ’885 Patent (at many points, identifies a characteristic, contacts fibers, not decorative).
- Independent Claim 14 (Method) requires:
- A method of detecting a characteristic of a fabric, comprising:
- (A) providing a fabric having a procedure map thereon (as described in the product claims)
- (B) inspecting the fabric with a machine which detects one or more of the machine-made markings.
- The complaint reserves the right to assert other claims. (Compl. ¶48).
III. The Accused Instrumentality
Product Identification
- The "Accused Products" are fabrics created and sold by Defendant Spoonflower, a "print-on-demand" business. (Compl. ¶15, 19). The complaint specifically mentions fabrics with "procedure maps that facilitate the cutting and shaping of fabric" and identifies one example as "fabric displaying pattern 8091225." (Compl. ¶19, 42, 51).
Functionality and Market Context
- The complaint alleges that Spoonflower’s business model involves printing customer-selected designs onto fabric. (Compl. ¶15). In doing so, Defendants allegedly also print markings around each design. (Compl. ¶29). These markings are alleged to form a "procedure map" that identifies fabric characteristics like "the bias and selvedge," serves no decorative purpose, and facilitates more accurate manufacturing. (Compl. ¶27, 30). The complaint includes an annotated image of a purchased fabric sample, Exhibit C, which purports to show these non-decorative markings and an explanatory legend. (Compl. ¶30, Exhibit C). It also provides a screenshot from the Spoonflower website, Exhibit D, as an example of the accused products being marketed. (Compl. ¶32, Exhibit D).
IV. Analysis of Infringement Allegations
’885 Patent Infringement Allegations
| Claim Element (from Independent Claim 24) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A fabric which has a procedure map thereon, the procedure map comprising at least one set of machine-made markings | Defendants manufacture and sell fabrics that include digitally printed markings that are alleged to comprise a "procedure map." | ¶19, ¶29 | col. 8:36-38 |
| which (a) is at many points across the breadth and throughout the length of the fabric | The complaint alleges the markings are printed "at many points across the breadth and throughout the length of the fabric." | ¶29 | col. 8:40-42 |
| which (b) identifies at least one characteristic of the fabric, said at least one characteristic being selected from the group consisting of lengthwise straight of grain, crosswise straight of grain, true bias, position of a decorative pattern... | The complaint states that purchased samples contained a procedure map that "enabled identification of fabric characteristics such as the bias and selvedge." | ¶27, ¶30 | col. 8:43-52 |
| which... directly contacts fibers of the fabric | The markings are allegedly "digitally printing" onto the fabric, which would involve direct contact. | ¶29 | col. 8:53-54 |
| and... is not part of a decorative pattern | The complaint alleges that the markings "serve no decorative purpose" and cites annotated samples in Exhibit C as illustration. | ¶30 | col. 8:55 |
’769 Patent Infringement Allegations
| Claim Element (from Independent Claim 6) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A fabric having a procedure map thereon, the procedure map comprising at least one set of machine-made markings | Defendants manufacture and sell fabrics that include digitally printed markings alleged to be a "procedure map." | ¶19, ¶29 | col. 6:23-25 |
| which (a) is at many points across the breadth and throughout the length of the fabric | The complaint alleges the markings are printed "at many points across the breadth and throughout the length of the fabric." | ¶29 | col. 6:26-27 |
| which (b) identifies at least one characteristic of the fabric, said at least one characteristic being selected from the group consisting of lengthwise straight of grain, crosswise straight of grain, true bias, position of a decorative pattern... | The complaint states that purchased samples contained a procedure map that "enabled identification of fabric characteristics such as the bias and selvedge." | ¶27, ¶30 | col. 6:28-35 |
| which (c) directly contacts fibers of the fabric | The markings are allegedly "digitally printing" onto the fabric, which would involve direct contact. | ¶29 | col. 6:36 |
| and (d) is not part of a decorative pattern | The complaint alleges that the markings "serve no decorative purpose" and cites annotated samples in Exhibit C as illustration. | ¶30 | col. 6:37 |
- Identified Points of Contention:
- Scope Questions: A primary issue for the court will be whether the markings used by Spoonflower, which the complaint alleges are printed around designs, constitute a "procedure map" as that term is used in the patents. The defense may argue that the term implies a more comprehensive, grid-like system as depicted in the patent figures, rather than perimeter markings.
- Technical Questions: The infringement analysis will likely turn on the specific function of the accused markings. The complaint alleges they identify characteristics like "bias and selvedge" (Compl. ¶27). A key question is whether these markings inherently "identify" a claimed characteristic (e.g., "true bias," "straight of grain") or if they serve another purpose, such as being print registration marks, QR codes for order tracking, or simple cutting lines, which may not align with the specific characteristics enumerated in the claims.
V. Key Claim Terms for Construction
The Term: "procedure map"
- Context and Importance: This term is the central inventive concept of the patents-in-suit. Whether the accused markings fall within the scope of this term will be a dispositive issue for infringement. Practitioners may focus on this term because its construction will define the boundaries of the patented invention.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent abstract defines it functionally as that which "enables identification... of one or more of the fabric characteristics." (’885 Patent, Abstract). The term is not given a special definition, which may support an interpretation based on its plain and ordinary meaning in light of the specification.
- Evidence for a Narrower Interpretation: The specification repeatedly links the "procedure map" to a specific, enumerated list of characteristics and illustrates it with grid-like markings covering the fabric surface. (’885 Patent, col. 1:46-57; FIG. 1). A party could argue the term is limited to a system that provides such comprehensive, grid-like orientation information.
The Term: "identifies at least one characteristic of the fabric"
- Context and Importance: This phrase defines the required function of the "procedure map." The dispute will center on what it means for a marking to "identify" a characteristic and whether the accused markings perform this function.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: This could be construed to mean that the markings provide a reference from which a characteristic can be easily determined (e.g., a printed line parallel to the selvedge "identifies" the lengthwise grain).
- Evidence for a Narrower Interpretation: This could be construed to require the marking to more explicitly convey the information (e.g., an arrow with text) or be part of a system that directly communicates the characteristic, as opposed to simply being a reference point for measurement.
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement against both defendants. (Compl. ¶41, 50). The factual basis includes allegations that Spoonflower "encourages its designers and customers to promote" the products (Compl. ¶16), and that Shutterfly, as an alleged parent company, "is inducing and facilitating" the infringements and directs web traffic to Spoonflower. (Compl. ¶16, 23). This suggests a theory that Defendants encourage end-users to use the infringing fabrics in an infringing manner.
- Willful Infringement: The complaint alleges willful infringement based on pre-suit knowledge. (Compl. ¶46, 55). It specifically alleges that Defendants received a "first express notice" of the asserted patents on May 4, 2022, and a "second notice" on June 24, 2022, that "provided Defendants with an infringement analysis." (Compl. ¶35, 36). The allegation is that Defendants' infringement has been "deliberate and willful" since at least the date of first notice. (Compl. ¶46, 55).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: Can the term "procedure map", which is described in the patent specification with examples of comprehensive grids, be construed to read on the system of markings allegedly printed by Spoonflower around individual designs?
- A key evidentiary question will be one of functional purpose: Do the accused markings on Spoonflower’s fabrics perform the claimed function of "identifying" specific fabric characteristics like "true bias" or "straight of grain," or is their primary function for a different, non-infringing purpose, such as print registration, branding, or order fulfillment?
- A third central question will concern willfulness: Given the complaint’s specific allegations of pre-suit notice, including the provision of an infringement analysis more than a year before the suit, a critical issue will be whether Defendants’ continued accused activities after that notice were objectively reckless, which could expose them to enhanced damages.