DCT

1:23-cv-01185

Samtech LLC v. Brooklyn Armed Forces LLC

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:23-cv-01185, E.D.N.Y., 01/17/2024
  • Venue Allegations: Venue is alleged to be proper because Defendants have committed acts of patent infringement in the district, conduct business there, and a substantial part of the events giving rise to the claim occurred in the district.
  • Core Dispute: Plaintiff alleges that Defendants' military-style jackets infringe a design patent covering the ornamental appearance of a jacket.
  • Technical Context: The dispute is in the field of high-performance military and tactical apparel, where specific designs can be associated with quality and performance characteristics like flame resistance.
  • Key Procedural History: The complaint alleges Plaintiff sent multiple pre-suit notice letters to certain Defendants, with the first sent to Sportsman's Guide in January 2016. It also alleges that a principal of Defendant Brooklyn Armed Forces, Ramin Kohanbash, pleaded guilty in 2019 to trafficking in counterfeit U.S. military uniforms, conduct the complaint asserts is related to the current allegations.

Case Timeline

Date Event
2010-07-09 D641,137 Patent Priority Date (Application Filing Date)
2011-07-12 D641,137 Patent Issued
2016-01-19 Plaintiff's counsel sends first notice letter to Sportsman's Guide
2019-06-01 Defendant principal Ramin Kohanbash pleads guilty to trafficking counterfeit uniforms
2022-10-01 Defendant principal Ramin Kohanbash sentenced
2022-11-14 Plaintiff's counsel sends notice letter to BAF LLC
2023-03-01 Plaintiff's counsel sends second notice letter to Sportsman's Guide
2024-01-17 Third Amended Complaint Filing Date

II. Technology and Patent(s)-in-Suit Analysis

U.S. Design Patent No. D641,137 - "Military Style Jacket"

  • Patent Identification: U.S. Design Patent No. **D641,137**, "Military Style Jacket," issued July 12, 2011.

The Invention Explained

  • Problem Addressed: Design patents do not solve a technical problem but protect the novel, non-functional, ornamental appearance of an article of manufacture (Compl. ¶19).
  • The Patented Solution: The patent claims the specific ornamental design for a military-style jacket, as depicted in sixteen figures showing the article from various perspectives (**’137** Patent, Figs. 1-16). The design is characterized by a combination of visual elements, including the particular shape, placement, and configuration of sleeve and chest pockets, a stand-up collar, and distinctive stitch patterns that define the jacket's paneled construction (’137 Patent, Figs. 2, 3; Compl. ¶19).
  • Technical Importance: The complaint alleges that products incorporating the patented design are commercially successful and are "leading products of its kind in the market," suggesting the design has achieved recognition and commercial value (Compl. ¶20).

Key Claims at a Glance

  • Design patents contain a single claim. The asserted claim is for "The ornamental design for a military style jacket, as shown and described" (’137 Patent, Claim).
  • The scope of this claim is defined by the visual appearance of the jacket in the patent drawings. Its essential ornamental elements include:
    • The overall configuration and proportions of the jacket.
    • The specific angular shape and placement of pockets on both sleeves.
    • The specific shape and placement of two rectangular patches on the chest.
    • The arrangement of prominent stitch lines across the front, back, and sleeves.
    • The shape of the stand-up collar.

III. The Accused Instrumentality

Product Identification

The "Accused Jackets" are various military-style jackets sold by Defendants under names including, but not limited to, the "BAF SOFTSHELL ELEMENT JACKET," "ELEMENT CREWMAN JACKET," "Brooklyn Armed Forces Light Weather Crewman Jacket," and "Brooklyn Armed Forces Crewman Jacket" (Compl. ¶22).

Functionality and Market Context

The Accused Jackets are sold through a "chain of commerce, including various websites, online stores, and locations" (Compl. ¶22). The complaint provides visual evidence from the Sportsman's Guide website, where the "Light Weather Jacket" and "Crewman Jacket" were offered for sale (Compl. ¶23). The complaint alleges these jackets are presented as military-style apparel and are marketed in a way that creates an association with Plaintiff's authentic, military-specification products (Compl. ¶¶26-27, 62-63).

IV. Analysis of Infringement Allegations

The complaint alleges that the Accused Jackets infringe by embodying a design that is substantially the same as the one claimed in the ’137 Patent. The core of this allegation is presented in a side-by-side visual comparison. The complaint alleges this visual similarity is intended to deceive an ordinary observer into purchasing an Accused Jacket believing it to be Plaintiff's product (Compl. ¶¶24, 26). This comparison shows front and rear views of the patented design next to photographs of the accused "Light Weather Jacket" and "Crewman Jacket" (Compl. ¶24, pp. 8-9).

The infringement test for a design patent is whether, in the eye of an ordinary observer, the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other. The complaint alleges specific features were copied, including "stitch patterns and layout and shaping of pockets, Identification Friend or Foe (IFF) tabs, and a pass-through flap" (Compl. ¶25). To support this, the complaint cites online forum posts where consumers allegedly identify the accused product as a "knock off" or "clone" of the Plaintiff's jacket (Compl. ¶27).

Identified Points of Contention

  • Scope Questions: The central legal question is not one of claim term construction but of applying the "ordinary observer" test. The dispute will likely focus on whether the overall visual impression of the Accused Jackets is substantially the same as the claimed design, or if any differences are sufficient to distinguish them in the eyes of a typical consumer.
  • Technical Questions: A factual question for the court will be a direct visual comparison of the products. The parties may dispute the significance of minor differences between the claimed design and the Accused Jackets (e.g., fabric texture, zipper pull design, minor proportional variances) and whether those differences are substantial enough to avoid a finding of infringement. The complaint's evidence of actual consumer confusion may be highly relevant to this analysis (Compl. ¶27).

V. Key Claim Terms for Construction

Claim construction, the process of defining the meaning of disputed terms, is not typically a central issue in design patent litigation. The claim is defined by the drawings as a whole rather than by text. The dispute will likely center not on the meaning of any particular term, but on the application of the "ordinary observer" infringement test to the overall visual design shown in the ’137 Patent figures.

VI. Other Allegations

Indirect Infringement

The complaint alleges active inducement of infringement under 35 U.S.C. § 271(b) (Compl. ¶72). The factual basis appears to rest on allegations that the individual defendants directed the corporate defendants to manufacture and sell the Accused Jackets, and that the corporate defendants supplied the jackets to retailers with the knowledge and intent that they would be resold to consumers (Compl. ¶¶31, 34, 40).

Willful Infringement

The complaint alleges willful and deliberate infringement, which could entitle the Plaintiff to enhanced damages (Compl. ¶¶75, 79). This allegation is supported by claims of pre-suit knowledge based on multiple notice letters sent to Defendants beginning in 2016 and continuing into 2023, and Defendants' alleged continuation of infringing conduct despite these notices (Compl. ¶¶41, 43, 48, 49, 76-77). The complaint also points to a principal's prior criminal conviction for trafficking counterfeit military uniforms as evidence of a pattern of conduct (Compl. ¶32).

VII. Analyst’s Conclusion: Key Questions for the Case

  • A core issue will be one of visual comparison: In applying the ordinary observer test, are the accused jackets "substantially the same" as the patented design, or do differences in detail create a distinct overall visual impression? The complaint's evidence of alleged actual consumer confusion, describing the accused product as a "clone," will be a key focal point in this analysis.
  • A second critical question will be one of intent and willfulness: Did the defendants' alleged continuation of sales after receiving multiple notice letters dating back to 2016 constitute deliberate or reckless disregard for the plaintiff's patent rights, sufficient to support a finding of willful infringement and potential enhancement of damages?
  • Finally, should infringement be found, a central question for damages will be the application of 35 U.S.C. § 289. This will require a determination of the defendants' total profit from the sale of the Accused Jackets, a remedy unique to design patent infringement that allows for a complete disgorgement of the infringer's profits.