DCT

2:24-cv-00603

Knix Wear Inc v. Panty Prop Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:24-cv-00603, E.D.N.Y., 01/26/2024
  • Venue Allegations: Venue is alleged to be proper based on Defendant having a regular and established place of business in the district, committing acts of infringement in the district, and having previously agreed to the jurisdiction and venue of the court in a settlement agreement.
  • Core Dispute: Plaintiff alleges that Defendant’s period underwear products infringe three patents related to the construction of absorbent garments and that Defendant’s sales violate a prior settlement agreement between the parties.
  • Technical Context: The technology concerns methods for constructing absorbent garments, such as period underwear, to be discreet, comfortable, and leak-resistant, particularly by using bonding film instead of traditional stitching.
  • Key Procedural History: The complaint alleges a prior dispute where Plaintiff notified Defendant of infringement of two patents in June 2021, leading to a December 2021 settlement agreement in which Defendant agreed to cease selling products with a specific "Bonding Feature" after a phase-out period ending June 2, 2022. Plaintiff alleges Defendant breached this agreement by continuing to sell products with the proscribed feature, leading to the current lawsuit which includes an additional, more recently issued patent.

Case Timeline

Date Event
2013-05-03 Priority Date for ’479, ’480, and ’931 Patents
2019-10-15 Issue Date for U.S. Patent No. 10,441,479
2019-10-15 Issue Date for U.S. Patent No. 10,441,480
2021-06-11 Plaintiff sends notice letter to Defendant regarding ’479 and ’480 Patents
2021-12-02 Settlement agreement between parties becomes effective
2022-06-02 End of sales phase-out period per the agreement
2022-06-07 Plaintiff's counsel purchases "Second Accused Product"
2022-06-15 Plaintiff sends letter to Defendant alleging breach of agreement
2023-08-29 Issue Date for U.S. Patent No. 11,737,931
2023-09-05 Plaintiff's counsel purchases "Third Accused Product"
2023-12-06 Plaintiff sends notice letter to Defendant regarding all three asserted patents
2024-01-26 Complaint Filed

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

U.S. Patent No. 10,441,479 - Absorbent Garment

Issued October 15, 2019

The Invention Explained

  • Problem Addressed: The patent describes a need for absorbent undergarments suitable for issues like stress incontinence that are not bulky or aesthetically unappealing, problems common in prior art garments (Compl. ¶4; ’479 Patent, col. 5:5-9). Traditional stitching used to attach absorbent pads can create unseemly bulk visible through outer clothing and can also create potential leak points by puncturing the materials (’479 Patent, col. 6:17-23, col. 9:54-57).
  • The Patented Solution: The invention is a method of manufacturing an undergarment by bonding an absorbent assembly to the garment body using an "elastic bonding film" instead of stitching (’479 Patent, Abstract). This film is applied along the leg openings and overlies a "peripheral region" of the absorbent pad, creating a smooth, seam-free, and structurally unified garment that is comfortable and discreet under tight-fitting clothes (’479 Patent, col. 5:10-21, col. 7:45-54).
  • Technical Importance: This manufacturing approach using bonding film aimed to produce functional absorbent garments that are more discreet and comfortable than stitched alternatives, broadening their appeal and usability with a wider range of apparel (’479 Patent, col. 6:55-65).

Key Claims at a Glance

  • The complaint asserts independent claim 17 (Compl. ¶41).
  • Essential elements of claim 17 include:
    • A method of manufacturing an undergarment comprising:
    • arranging an absorbent assembly that includes an absorbent layer over at least a crotch region of a body portion of the undergarment; and
    • bonding the absorbent assembly to the body portion by lining the leg opening regions with elastic bonding film;
    • such that the elastic bonding film overlies respective portions of a peripheral region of the absorbent assembly and bonds the absorbent assembly to the body portion;
    • wherein the undergarment is configured to be washed and re-worn numerous times.
  • The complaint does not explicitly reserve the right to assert other claims of the ’479 Patent.

U.S. Patent No. 10,441,480 - Absorbent Garment

Issued October 15, 2019

The Invention Explained

  • Problem Addressed: As with the related ’479 Patent, the invention seeks to solve the problem of bulky, uncomfortable, and potentially leaky absorbent garments that rely on traditional stitching for construction (’480 Patent, col. 5:5-9).
  • The Patented Solution: This patent claims the undergarment product itself. The garment includes a body portion, an absorbent assembly (comprising an absorbent layer and a moisture-barrier layer), and "strips of elastic bonding film" that bond the absorbent assembly to the body portion (’480 Patent, Claim 1). The film is bonded to the leg opening regions and secures the absorbent assembly, creating a seamless and washable garment (’480 Patent, col. 10:3-13).
  • Technical Importance: The claimed product provides consumers with a reusable absorbent undergarment that offers moisture protection without the aesthetic and comfort drawbacks of prior stitched designs, making it suitable for wear with form-fitting clothing (’480 Patent, col. 6:55-65).

Key Claims at a Glance

  • The complaint asserts independent claim 1 (Compl. ¶47).
  • Essential elements of claim 1 include:
    • An undergarment comprising: a body portion with leg opening regions and a crotch region;
    • an absorbent assembly including an absorbent layer and a moisture-barrier layer;
    • strips of elastic bonding film bonding the absorbent assembly to the body portion;
    • wherein the absorbent assembly overlies the crotch region with the moisture-barrier layer facing the body portion;
    • wherein the strips of elastic bonding film are bonded to the leg opening regions and bond at least a portion of the absorbent assembly to the body portion; and
    • wherein the undergarment is configured to be washed and re-worn numerous times.
  • The complaint also asserts dependent claims 2-4, 12, 15, 16, 18, 21-23, and 25 (Compl. ¶47).

U.S. Patent No. 11,737,931 - Garments and Associated Methods

Issued August 29, 2023

  • Technology Synopsis: This patent also describes absorbent garments constructed to be discreet and comfortable. The invention focuses on a garment where an absorbent assembly is bonded to the body portion using elastic bonding film without stitching, resulting in a seamless, washable, and reusable product suitable for wear under various types of clothing (’931 Patent, Abstract, col. 5:17-25).
  • Asserted Claims: Independent claims 1 and 13 are asserted (Compl. ¶53).
  • Accused Features: The complaint alleges that the construction of the Accused Products, specifically the use of the "Bonding Feature" to attach the absorbent assembly without stitching, infringes this patent (Compl. ¶15, ¶31).

III. The Accused Instrumentality

Product Identification

The complaint identifies three sets of accused products: the "First Accused Product" (sold as "Bliss™ period underwear"), the "Second Accused Product" (SKU 71097039515), and the "Third Accused Product" (sold as "Women's Period Underwear - Hipster," SKU 70015037913) (Compl. ¶6, ¶10, ¶15).

Functionality and Market Context

The accused products are period underwear sold by Defendant Ruby Love (Compl. ¶5). The complaint alleges these products are constructed with "a bonding film that serves to bond an absorbent assembly to the body portion along leg opening regions of the underwear," a feature Plaintiff terms the "Bonding Feature" (Compl. ¶8). Plaintiff alleges the Second and Third Accused Products are identical or substantially identical in construction to the First Accused Product, which was the subject of the prior settlement agreement (Compl. ¶10, ¶28). The complaint provides an image of Knix Wear's own period underwear to illustrate the product category at issue (Compl. ¶3). This visual establishes the general appearance and type of garment central to the litigation.

IV. Analysis of Infringement Allegations

The complaint references illustrative claim charts in Exhibits I, J, K, L, M, and N to demonstrate infringement but does not attach these exhibits (Compl. ¶35-38). The infringement analysis is therefore based on the narrative allegations in the complaint.

'479 Patent Infringement Allegations

The complaint alleges that Defendant infringes method claim 17 of the ’479 Patent by manufacturing, using, selling, or importing the Accused Products (Compl. ¶41). The theory of infringement is that the manufacturing process for these products includes the claimed steps of arranging an absorbent assembly within the garment's crotch region and bonding that assembly to the body portion by lining the leg openings with an "elastic bonding film" (the "Bonding Feature") (Compl. ¶8, ¶15). The complaint refers to Exhibit L for a detailed element-by-element mapping for the Third Accused Product, but this exhibit is not provided (Compl. ¶38).

'480 Patent Infringement Allegations

The complaint alleges that the Accused Products directly infringe at least claim 1 of the ’480 Patent (Compl. ¶47). The infringement theory is that the Accused Products are undergarments that embody the claimed invention. They are alleged to possess a body portion, an absorbent assembly (with both absorbent and moisture-barrier layers), and the "Bonding Feature," which corresponds to the claimed "strips of elastic bonding film" that bond the assembly to the body portion along the leg openings (Compl. ¶8, ¶15, ¶47). The complaint refers to Exhibit M for a detailed mapping for the Third Accused Product, but this exhibit is not provided (Compl. ¶38).

Identified Points of Contention

  • Scope Questions: A primary question may be whether the "Bonding Feature" present in the Second and Third Accused Products is the same feature that Defendant agreed to discontinue and whether that feature, as implemented, falls within the scope of the asserted claims. The dispute centers on the allegation that the products are "identical in construction" to a previously identified infringing product (Compl. ¶10).
  • Technical Questions: An evidentiary question will concern the precise materials and construction of the accused underwear. Specifically, what is the composition and function of the material used to attach the absorbent pad? The court may need to determine if this material qualifies as an "elastic bonding film" as that term is understood in the context of the patent specifications.

V. Key Claim Terms for Construction

  • The Term: "elastic bonding film" (from '479 claim 17; '480 claim 1)

    • Context and Importance: This term is central to the dispute, as it describes the core "Bonding Feature" at issue in both the patent infringement and breach of contract claims (Compl. ¶8). The definition of what constitutes such a film will be critical to determining whether the accused products infringe.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The patents describe the film functionally as serving to "bond the absorbent pad and the body portion" (’479 Patent, Abstract) without specifying a particular chemical composition. This may support an interpretation covering any film that is elastic and performs this bonding function in the manner described.
      • Evidence for a Narrower Interpretation: The patents describe the film as enabling a "substantially seamless" and "smooth" garment construction (’479 Patent, col. 6:30-34, col. 7:50-54). A party could argue the term is limited to films that achieve this specific aesthetic and functional outcome, as shown in embodiments where the film lines the leg openings and creates a flush surface with the absorbent pad's inner region (’479 Patent, Fig. 2).

  • The Term: "peripheral region" (from '479 claim 17)

    • Context and Importance: Method claim 17 requires the "elastic bonding film" to overlie a "peripheral region" of the absorbent assembly. The existence and characteristics of this region in the accused manufacturing process will be a key factual question for infringement.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The specification describes this as a "generally uniform-width strip running the periphery of the absorbent pad," which could support a reading on any border area of the pad (’479 Patent, col. 7:26-29).
      • Evidence for a Narrower Interpretation: The specification also teaches that this region may be a "reduced-thickness peripheral region" formed by "thermo-compression bonding" which "increases the density" to "facilitate bonding with the elastic bonding film" (’479 Patent, col. 5:45-48, col. 8:15-28). A party may argue that the term requires these specific physical properties and is not simply any edge portion of the pad.

VI. Other Allegations

Willful Infringement

The complaint alleges willful infringement based on Defendant's alleged knowledge of the patents (Compl. ¶42, ¶48, ¶54). The allegations state that Defendant has been aware of the '479 and '480 patents since at least a June 11, 2021 notice letter (Compl. ¶32). For the '931 patent, the complaint alleges Defendant was put on notice of the then-pending application (which had claims that issued in the '931 patent) in October 2021 and was notified of infringement of the issued patent in a letter on December 6, 2023 (Compl. ¶33-34). The alleged breach of the prior settlement agreement is presented as further evidence of willfulness.

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

  • A core issue will be one of factual and contractual identity: are the "Second" and "Third Accused Products" sold by the Defendant after the settlement deadline substantially the same in construction as the "First Accused Product" that it agreed to stop selling? The determination of the breach of contract claim is intertwined with the patent infringement analysis.
  • A key evidentiary question will be one of technical implementation: does the bonding material and method used in the accused underwear meet the specific claim limitations, particularly the meaning of "elastic bonding film" and its application to a "peripheral region" of the absorbent assembly as described in the patent specifications?
  • A central question for damages will be willfulness: given the detailed history of notice, negotiations, and a prior settlement agreement, the court will likely focus on the Defendant's state of mind regarding its post-agreement conduct to determine if it rises to the level of objective recklessness required for enhanced damages.