DCT
3:21-cv-00572
Banyan Licensing LLC v. MARSHALLS Of Ma
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Banyan Licensing L.L.C. (North Carolina)
- Defendant: Marshalls of MA, Inc. d/b/a Marshalls (Massachusetts)
- Plaintiff’s Counsel: Moore & Van Allen PLLC
- Case Identification: 3:21-cv-00572, W.D.N.C., 10/25/2021
- Venue Allegations: Venue is based on Defendant doing business and selling the accused products within the Western District of North Carolina, supported by a specific allegation of an infringing product being purchased from a Marshalls store in the district.
- Core Dispute: Plaintiff alleges that Defendant’s "Leg Pillow" product infringes a design patent and a utility patent directed to an ergonomic pillow apparatus.
- Technical Context: The technology relates to ergonomic support pillows, specifically those contoured to fit between a user's legs to provide support and alignment for the thighs and knees, primarily for side-sleepers.
- Key Procedural History: The complaint notes that Plaintiff's own commercial product, the "Contour Legacy Knee Pillow," has been properly marked pursuant to 35 U.S.C. § 287, an allegation that forms the basis for a claim of constructive knowledge.
Case Timeline
| Date | Event |
|---|---|
| 2018-01-26 | Priority Date for U.S. Patent No. 10,893,762 |
| 2018-06-15 | Filing/Priority Date for U.S. Patent No. D846,312 |
| 2019-04-23 | Issue Date for U.S. Patent No. D846,312 |
| 2021-01-19 | Issue Date for U.S. Patent No. 10,893,762 |
| 2021-10-11 | Alleged Infringing Leg Pillow Purchased |
| 2021-10-25 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D846,312 - Pillow
- Patent Identification: U.S. Design Patent No. D846,312, "Pillow," issued April 23, 2019.
- The Invention Explained:
- Problem Addressed: The patent does not describe a technical problem, as it protects only the ornamental, non-functional appearance of an article of manufacture (Compl. ¶12).
- The Patented Solution: The patent claims the ornamental design for a pillow characterized by an hourglass-like top profile, tapering from a wider end to a narrower end, with concave top and bottom surfaces and distinctive curved side walls (D’312 Patent, FIGs. 1, 8, 14). The overall visual impression is one of a contoured, ergonomic shape.
- Technical Importance: The design provides a unique aesthetic appearance for a pillow intended for leg support.
- Key Claims at a Glance:
- The D’312 Patent contains a single claim for "The ornamental design for a pillow, as shown and described" (D’312 Patent, p. 1).
U.S. Patent No. 10,893,762 - Pillow Apparatus
- Patent Identification: U.S. Patent No. 10,893,762, "Pillow Apparatus," issued January 19, 2021.
- The Invention Explained:
- Problem Addressed: The patent background describes that conventional pillows are "unable to provide optimal support to a user's limbs" and may "cause undue pressure, strain and discomfort" when used between the legs (’762 Patent, col. 1:22-28).
- The Patented Solution: The invention is a pillow apparatus with a specific three-dimensional contour designed to overcome these issues. It features opposing concave depressions to accommodate a user's legs and a body that varies in height and thickness from one end to the other, which is structured to optimally support the thighs while allowing "unrestricted bending of knees" (’762 Patent, col. 5:20-27; Abstract). The shape shown in Figure 5A, for example, illustrates the tapered profile and surface contours (’762 Patent, FIG. 5A).
- Technical Importance: This specific structure purports to provide superior ergonomic support and comfort for side-sleepers compared to generic pillows by matching the natural contours of the legs and allowing for comfortable movement.
- Key Claims at a Glance:
- The complaint asserts independent claim 1.
- The essential elements of independent claim 1 include:
- A pillow body with defined ends and lateral sides.
- A first concave depression on the first surface extending between the ends.
- A second concave depression on the second surface extending between the ends.
- A structural limitation where the height at the first end is greater than the height at the second end.
- A structural limitation where the minimum thickness between the depressions at the first end is less than the minimum thickness at the second end.
- The complaint reserves the right to assert dependent claims 2-5 and 7-10 (’762 Patent, col. 22:41-col. 23:28; Compl. ¶36).
III. The Accused Instrumentality
- Product Identification: The "Leg Pillow" sold by Defendant Marshalls (Compl. ¶5).
- Functionality and Market Context: The complaint alleges the Leg Pillow is a product sold through Marshalls retail stores that embodies the patented inventions (Compl. ¶¶5, 14). The complaint provides a photograph of the accused Leg Pillow, depicting a contoured foam pillow with a fabric cover, an hourglass-like shape, and concave surfaces (Compl. ¶17). The complaint characterizes the accused product as a "replica of the Banyan Product" and alleges it has "substantially the same ornamental design as the design claimed in the D’312 Patent" (Compl. ¶¶17, 20).
IV. Analysis of Infringement Allegations
For the D’312 Patent, infringement depends on the "ordinary observer" test, which asks whether an ordinary observer, familiar with the prior art, would be deceived into purchasing the accused product believing it is the patented design. The complaint’s primary evidence for infringement is a visual, side-by-side comparison of the patented design, the plaintiff's product, and the accused product (Compl. ¶17). This photograph shows the accused Leg Pillow's overall shape, curved contours, and proportions, which the complaint alleges are "substantially the same" as the patented design (Compl. ¶18).
’762 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a pillow body having a first end, a second end, a first lateral side, a second lateral side, a first surface extending... and a second surface extending... | The complaint alleges the accused "Leg Pillow" is a pillow apparatus comprising a pillow body with these features. | ¶35 | col. 15:1-13 |
| a first concave depression positioned on the first surface of the pillow body and extending from the first end to the second end, [and] a second concave depression positioned on the second surface of the pillow body... | The complaint alleges the accused "Leg Pillow" comprises first and second concave depressions positioned on its opposing surfaces. | ¶35 | col. 15:50-54 |
| wherein the first and second lateral sides define a first height at the first end of the pillow body and a second height at the second end of the pillow body and wherein the first height is greater than the second height | The complaint alleges the accused "Leg Pillow" possesses lateral sides where the height at one end is greater than the height at the other. | ¶35 | col. 17:55-60 |
| and wherein the pillow body defines between the first and second concave depressions a first minimum thickness at the first end... and a second minimum thickness at the second end... and wherein the first minimum thickness is less than the second minimum thickness | The complaint alleges the accused "Leg Pillow" possesses a thickness profile where the minimum thickness between the depressions at the first end is less than that at the second end. | ¶35 | col. 17:29-31 |
- Identified Points of Contention:
- Scope Questions (D'312 Patent): A central question will be how an ordinary observer views the accused product in light of prior art ergonomic pillows. The overall impression of the design, not minor differences, will be determinative.
- Technical Questions (’762 Patent): The complaint alleges the accused product meets the specific dimensional and relational limitations of claim 1 (e.g., "height is greater," "thickness is less") but provides no measurements or specific data to support these allegations (Compl. ¶35). A key point of contention will be whether discovery and expert analysis can produce evidence that the accused Leg Pillow, in fact, satisfies these precise quantitative requirements.
V. Key Claim Terms for Construction
The Term: "concave depression"
- Context and Importance: This term defines the primary surfaces that interact with the user's legs. Its construction is critical because it dictates the required shape and contour of the accused product. Practitioners may focus on this term because the degree and nature of the "concavity" could be a point of dispute.
- Evidence for a Broader Interpretation: The claims use the general term "concave depression" without further geometric limitation, suggesting any inwardly curved surface could meet the limitation (’762 Patent, col. 22:23-29).
- Evidence for a Narrower Interpretation: The specification describes embodiments where the depression is "shaped, dimensioned and otherwise structured to receive and at least partially surround a thigh of a user" and has specific cross-sections like a "parabolic, elliptical, [or] semi-circular" shape, which could suggest a more specific structure is required (’762 Patent, col. 17:20-22, 17:46-49).
The Term: "first height is greater than the second height"
- Context and Importance: This is a precise relational limitation that defines the pillow's tapered profile, a key feature of the invention. Infringement will depend entirely on whether the accused product meets this measurable characteristic.
- Intrinsic Evidence for Interpretation: The specification provides a clear guide for interpreting this term, defining "height(s) H" by reference to the lateral sides and ends of the pillow body (’762 Patent, col. 15:26-30). Figure 5C explicitly labels "Ha" at one end and "Hb" at the other, illustrating the intended measurement points and the claimed relationship (’762 Patent, FIG. 5C; col. 17:52-57). The debate may center not on the definition, but on the application of that definition to the physical accused product.
VI. Other Allegations
- Indirect Infringement: The complaint alleges Marshalls induced infringement by "encouraging and promoting the use" of the Leg Pillow and by selling it to end consumers with the intent that they use it in an infringing manner (Compl. ¶¶23-24, 43-44). The factual support for these allegations appears to rest on the act of marketing and selling the product itself.
- Willful Infringement: Willfulness is alleged for both patents. The complaint bases this on alleged constructive knowledge from Plaintiff's patent marking on its own products and on actual knowledge that will arise from service of the complaint (Compl. ¶¶21-22, 41-42).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue for the D’312 design patent will be one of visual perception: applying the ordinary observer test, is the overall ornamental design of the accused "Leg Pillow" substantially the same as the patented design, especially when viewed in the context of other ergonomic pillows that may constitute the relevant prior art?
- A key evidentiary question for the ’762 utility patent will be one of dimensional compliance: can the Plaintiff produce factual evidence, such as physical measurements and expert analysis, to demonstrate that the accused product meets the specific and quantitative relational limitations of claim 1, particularly the requirements that the "first height is greater than the second height" and the "first minimum thickness is less than the second minimum thickness"?
- A central question for damages will relate to knowledge and intent: can the Plaintiff prove that the Defendant had pre-suit knowledge of the patents, beyond the constructive notice alleged via patent marking, which would be critical for establishing pre-suit willfulness and a basis for enhanced damages?