DCT
3:24-cv-07378
Blackstrap Industries Inc v. Rockbros USA LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Blackstrap Industries, Inc. (Oregon)
- Defendant: Rockbros USA LLC (New Jersey)
- Plaintiff’s Counsel: Saul Ewing LLP
- Case Identification: 3:24-cv-07378, D.N.J., 06/28/2024
- Venue Allegations: Venue is alleged to be proper in the District of New Jersey because the Defendant is incorporated and resides in the state.
- Core Dispute: Plaintiff alleges that Defendant’s balaclava products infringe a design patent covering the ornamental appearance of a hooded facemask with a distinctive pivoting mouthpiece.
- Technical Context: The technology pertains to outdoor apparel, specifically balaclavas, which are protective head and face coverings used in sports like skiing and cycling.
- Key Procedural History: The complaint alleges that Defendant had pre-suit knowledge of the patent-in-suit as of November 15, 2023, via a complaint filed with Amazon. Defendant subsequently filed a declaratory judgment action against Plaintiff in the Northern District of Illinois on December 31, 2023, which it voluntarily dismissed on April 17, 2024. Plaintiff also certifies that the patent-in-suit is the subject of a USPTO ex parte re-examination initiated on April 16, 2024. The re-examination’s outcome could impact the patent's validity and enforceability.
Case Timeline
| Date | Event |
|---|---|
| 2013-04-25 | D’703 Patent Priority Date |
| 2016-06-14 | D’703 Patent Issue Date |
| 2021-09-08 | Alleged first date of Defendant's infringing sales |
| 2023-11-15 | Plaintiff files complaint with Amazon, allegedly notifying Defendant |
| 2023-12-31 | Defendant files declaratory judgment action in N.D. Ill. |
| 2024-04-16 | USPTO initiates ex parte re-examination of D'703 Patent |
| 2024-04-17 | Defendant voluntarily dismisses its declaratory judgment action |
| 2024-06-28 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
- Patent Identification: U.S. Design Patent No. D758,703, "Hooded Facemask with a Pivoting Mouth Piece", issued June 14, 2016.
The Invention Explained
- Problem Addressed: The patent does not describe a technical problem but instead provides a new, unique, and non-obvious ornamental design for an article of manufacture, a hooded facemask (D’703 Patent, Claim).
- The Patented Solution: The patent claims the specific visual appearance of a balaclava, which is defined by the solid lines in its figures (D’703 Patent, Figs. 1-9). The design’s key ornamental features include a multi-panel construction, a flared base, and a prominent "T-shaped mouthpiece" (Compl. ¶9). This mouthpiece is depicted as a distinct element that overlaps the side panels of the mask, creating a layered look, and is shown in various positions, from lowered to fully raised (D’703 Patent, Figs. 1, 2, 9). The complaint highlights that the horizontal portion of this "T" is detached from the underlying side pieces, a key visual characteristic (Compl. ¶9).
- Technical Importance: The complaint alleges this "pioneering externally-hinged balaclava design" was a novel configuration in 2013 that has become a commercially significant product for the Plaintiff (Compl. ¶¶ 9, 11).
Key Claims at a Glance
- The patent contains a single claim for "the ornamental design for a hooded facemask with a pivoting mouth piece, as shown and described" (D’703 Patent, Claim).
- The scope of the claim is defined by the visual appearance of the article in the patent drawings. Key visual elements include:
- The overall shape of the head and neck covering.
- A multi-panel construction comprising a center piece, two side pieces, and a distinct mouthpiece.
- A "T-shaped" mouthpiece where the horizontal portion overlaps the side pieces and the vertical portion integrates into the neck.
- A flared portion at the base of the neck covering.
III. The Accused Instrumentality
Product Identification
The accused products are the "Rockbros Balaclavas," including a product identified as the "Balaclava Face Mask Adjustable Windproof UV Protection Hood" (Compl. ¶¶ 13, 14).
Functionality and Market Context
- The complaint describes the accused products as having the same construction as the claimed design, specifically featuring a flared base and a "T-shaped mouthpiece that is partially detached from the side pieces of the balaclava" (Compl. ¶13).
- The complaint provides annotated photographs of the accused Rockbros Balaclava to illustrate these design features (Compl. p. 8, Figs. 7 & 9). Figure 7 is a front view of the accused product annotated with red lines to highlight the detached horizontal edges of the T-shaped mouthpiece (Compl. p. 8, Fig. 7).
- Plaintiff alleges Defendant is a "direct competitor" that sells its balaclavas on major e-commerce platforms like Amazon, Walmart, and eBay (Compl. ¶¶ 5, 12).
IV. Analysis of Infringement Allegations
Design patent infringement is determined by 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 to be the patented design. The analysis centers on the similarity of the overall ornamental appearance.
Design Feature Comparison
| Ornamental Feature (from D'703 Patent) | Alleged Infringing Feature (in Rockbros Balaclava) | Complaint Citation | Patent Citation |
|---|---|---|---|
| Overall visual impression of a multi-panel hooded facemask. | The accused product is alleged to be "substantially similar to, or at least a colorable imitation of, the claimed design" (Compl. ¶13). | ¶13 | Figs. 1-9 |
| A distinct "T-shaped mouthpiece" with a horizontal portion that is partially detached from and overlaps the side panels. | The complaint alleges the accused product has a T-shaped mouthpiece where the horizontal portion is detached from and overlaps the side pieces, as illustrated with annotations (Compl. p. 8, Fig. 7). | ¶13 | Figs. 1, 2, 5, 6 |
| A vertical portion of the mouthpiece that is integrated into the neck portion of the balaclava. | The complaint alleges the accused product's construction includes a vertical portion of the "T" that is integrated into the neck portion (Compl. ¶13). | ¶13 | Figs. 1, 2 |
| A flared base at the bottom of the neck covering. | The complaint alleges the accused product has a flared base as part of its construction (Compl. ¶13). | ¶13 | Figs. 1-6 |
Identified Points of Contention
- Overall Appearance: The central question will be whether the overall visual appearance of the Rockbros Balaclava is substantially the same as the claimed design in the D'703 Patent. The court will consider the design as a whole, not just the similarity of individual features.
- Scope Questions: The dispute may focus on the visual importance of the "T-shaped mouthpiece" to the overall design. The degree of similarity in the shape, proportions, and layering of this specific feature, as seen by an ordinary observer, will be critical.
- Evidentiary Questions: The complaint alleges that Defendant altered the primary marketing image for its product on Amazon to "remove features illustrating the design similarities" while continuing to ship the allegedly infringing product (Compl. ¶17). Figure 11 shows the current, allegedly altered marketing image, which obscures the mouthpiece design (Compl. p. 10, Fig. 11). Evidence regarding these marketing practices could be relevant to other issues in the case, such as willfulness.
V. Key Claim Terms for Construction
In design patent litigation, formal construction of written claim terms is rare, as the design is claimed "as shown and described" in the figures. The scope of the patent is defined by the solid lines in the drawings. However, disputes can arise over the interpretation of the visual features depicted.
The "T-Shaped Mouthpiece"
- Context and Importance: This feature is described in the complaint as a pioneering and central element of the design (Compl. ¶9). The infringement analysis will likely turn on how similarly the accused product's mouthpiece assembly replicates the visual appearance of the mouthpiece shown in the patent's figures, including its shape, its overlapping relationship with the side panels, and its ability to pivot.
- Intrinsic Evidence for Interpretation: The patent figures themselves are the primary evidence. Figures 1, 2, and 9 show the mouthpiece in different positions (partially raised, fully raised, and lowered), defining the visual scope of this feature's appearance and range of motion as part of the overall design (D’703 Patent, Figs. 1, 2, 9). The side views in Figures 5 and 6 further delineate the profile and layered construction of this element (D’703 Patent, Figs. 5, 6).
VI. Other Allegations
Indirect Infringement
The complaint does not contain a specific count for indirect infringement, though the prayer for relief requests an injunction against "aiding, abetting, contributing to, or otherwise assisting anyone in infringing" (Compl. p. 12).
Willful Infringement
The complaint alleges willful infringement based on Defendant's alleged knowledge of the D’703 patent since at least November 15, 2023, due to an "Amazon Complaint" filed by Blackstrap (Compl. ¶15). The willfulness claim is further supported by allegations that Defendant filed and then voluntarily dismissed a declaratory judgment action concerning the patent, and later altered product marketing images while continuing to sell the allegedly infringing product under a new Amazon identifier (ASIN) (Compl. ¶¶ 16, 17, 22).
VII. Analyst’s Conclusion: Key Questions for the Case
- Infringement under the Ordinary Observer Test: The primary issue is one of visual similarity: from the perspective of an ordinary observer, is the overall ornamental design of the accused Rockbros Balaclava substantially the same as the design claimed in the D’703 patent, such that the observer would be deceived into purchasing the wrong product?
- Impact of Re-examination: A significant question is the effect of the ongoing ex parte re-examination on the litigation. While the patent remains presumed valid during the proceeding, a final determination by the USPTO confirming or canceling the claim will substantially impact the case's trajectory and potential for settlement.
- Willfulness and Bad Faith: A key factual question will be whether Blackstrap can prove that Rockbros’s alleged infringement was willful. This will depend on evidence of when Rockbros became aware of the patent and its alleged infringement, and whether its subsequent actions—including the prior litigation and alleged changes to its marketing—constitute objective recklessness or bad faith.