DCT

1:21-cv-02169

Sure Fit Home Products LLC v. Maytex Mills Inc

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Key Events
Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:21-cv-02169, S.D.N.Y., 03/12/2021
  • Venue Allegations: Plaintiffs allege venue is proper because Defendant has committed acts of infringement in the district and maintains a regular and established place of business there.
  • Core Dispute: Plaintiffs allege that Defendant’s shower curtains infringe a design patent for a shower curtain featuring integrated rings, and further allege trademark infringement and unfair competition.
  • Technical Context: The technology at issue is the ornamental design of shower curtains that incorporate built-in, split rings for hanging, which eliminates the need for separate shower hooks.
  • Key Procedural History: The complaint asserts a long history of licensing for the intellectual property, from owner Zahner Design Group to various entities now consolidated under the Sure Fit plaintiffs. The complaint also notes that Plaintiffs have previously enforced their patent rights against third parties through litigation and cease-and-desist letters, which may be used to argue the well-known nature and value of the design.

Case Timeline

Date Event
Beginning 1997 Plaintiffs allege first commercial sales of products incorporating the trade dress at issue.
2000-12-15 Earliest Priority Date for U.S. Patent No. D668,091.
As of 2005 Plaintiffs allege their products were installed in over one million hotel bathrooms.
2012-10-02 U.S. Patent No. D668,091 issues.
2021-03-12 Complaint filed.

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

U.S. Patent No. D668,091 - "Shower Curtain"

  • Patent Identification: United States Design Patent No. D668091, titled "Shower Curtain," issued on October 2, 2012. (Compl. ¶21).

The Invention Explained

  • Problem Addressed: The complaint does not frame a technical problem but implies an aesthetic one by contrasting the patented design with "traditional shower curtains having hooks," suggesting the latter lack a "symmetrical and neat overall appearance" (Compl. ¶55).
  • The Patented Solution: The patent claims the ornamental design for a shower curtain. The core visual features, as depicted in the patent's figures, are a series of integrated rings along the top of the curtain fabric which have a split or gap, allowing them to be passed over a shower rod without separate hooks (’091 Patent, FIG. 1, 7). This configuration is alleged to create an "essentially ‘neat’ and ‘orderly’ upper edge" because no hooks protrude above the curtain (Compl. ¶51.a).
  • Technical Importance: The complaint alleges that this design became "extremely popular" and achieved the status of "the leading shower curtain in the hospitality market," suggesting its aesthetic qualities had significant commercial impact (Compl. ¶62).

Key Claims at a Glance

  • As a design patent, the ’091 Patent contains a single claim: "The ornamental design for a shower curtain, as shown and described" (’091 Patent, Claim).
  • The scope of a design patent claim is defined by its drawings. The key visual elements shown include the shape and arrangement of the integrated, split rings along the top edge of the curtain material ('091 Patent, FIG. 1-7).
  • There are no dependent claims.

III. The Accused Instrumentality

Product Identification

  • Defendant’s "Ez-Up" and "InstaCurtain" shower curtains (Compl. ¶29).

Functionality and Market Context

  • The accused instrumentalities are described as shower curtains manufactured by Defendant Maytex and sold to retailers such as Home Depot (Compl. ¶27-28).
  • The complaint focuses on the ornamental design of these products, alleging that their visual appearance is "substantially the same" as the design protected by the ’091 Patent (Compl. ¶30). The complaint references attached exhibits containing images that allegedly compare the accused products to the patented design (Compl. ¶29). One such reference describes an image in an exhibit that allegedly shows Defendant's use of the "EZ-UP" mark on an accused product (Compl. ¶40, Exhibit 5).
  • Plaintiffs allege Defendant introduced these products to "trade off of the good will, secondary meaning, and success that Plaintiffs had accrued" (Compl. ¶80).

IV. Analysis of Infringement Allegations

The complaint does not contain a claim chart. As this is a design patent case, 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 one.

The complaint’s infringement theory rests on direct factual assertions of visual identity. Plaintiffs allege that for an ordinary observer, the design of the "Ez-Up" and "InstaCurtain" products and the design of the ’091 Patent are "substantially the same," creating the same design impression (Compl. ¶30, 32). The complaint goes further, claiming the resemblance is close enough to deceive a consumer into purchasing the accused product while believing it to be the Plaintiffs' (Compl. ¶34). The central factual allegation is that "the front of Defendant’s Accused Products is identical to Plaintiffs’ patented design, and the back is nearly identical to Plaintiffs’ patented design" (Compl. ¶35). To support this, the complaint references images in Exhibits 2 and 3 that allegedly provide a visual comparison of the products (Compl. ¶29).

Identified Points of Contention

  • Factual Question of Similarity: The primary dispute will be factual: does the overall ornamental appearance of the accused products appear substantially the same as the claimed design in the '091 Patent to an ordinary observer? This will involve a direct visual comparison between the accused products and the patent’s figures.
  • Scope Questions: The scope of protection afforded by the '091 Patent will be a key issue. The "ordinary observer" test is applied in the context of the prior art. The defense may argue that any similarities between the products relate to functional elements or designs that were already known in the field, thereby narrowing the scope of what is protectable under the patent.

V. Key Claim Terms for Construction

In design patent litigation, claim construction is typically not a central issue because the claim is defined by the drawings rather than by textual limitations. The single claim is for "[t]he ornamental design for a shower curtain, as shown and described" ('091 Patent, Claim). The dispute is unlikely to center on the definition of any particular word. Instead, the focus will be on the application of the "ordinary observer" test, comparing the overall visual effect of the accused products with the visual impression created by the patent's figures.

VI. Other Allegations

Indirect Infringement

  • The complaint alleges direct infringement under 35 U.S.C. § 271 but does not plead separate facts to support claims of induced or contributory infringement (Compl. ¶104-105).

Willful Infringement

  • The complaint includes detailed allegations of willful infringement. It asserts that Defendant was "aware of Plaintiffs' inventions and trademarks, before introducing them into commerce" (Compl. ¶84) and acted with "knowledge of Plaintiffs' asserted patent... rights" or, in the alternative, with "willful blindness" (Compl. ¶86, 88). These allegations, if proven, could support a claim for enhanced damages under 35 U.S.C. § 284 (Compl. ¶90).

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

  • A core issue will be one of visual comparison: Applying the "ordinary observer" test, is the overall ornamental design of Defendant's "Ez-Up" and "InstaCurtain" products substantially the same as the design claimed in the ’091 Patent's figures, such that a consumer would be deceived?
  • A second key question will involve the impact of prior art: How does the landscape of prior art for shower curtain designs affect the scope of the ’091 Patent? The answer will determine whether the similarities between the products are attributable to protected novel design features or to unprotectable, pre-existing concepts.
  • Finally, a significant question for damages will be state of mind: Can Plaintiffs provide sufficient evidence to demonstrate that Defendant had pre-suit knowledge of the ’091 Patent and either deliberately copied the design or acted with reckless disregard, thereby meeting the standard for willful infringement?